This example relates to the agrochemical sector, but similar problems are faced in the pharmaceutical sector.
Our client is a major R&D-based chemicals manufacturer with interests in agricultural chemicals. It was concerned about the activities of a well-funded UK-based individual who had obtained marketing authorisation for various companies controlled by him to sell under their own names a parallel imported patented pesticide product manufactured by our client. The active ingredient concerned was the subject of a UK patent owned by us. Given the price at which the products were being sold, our client suspected that they were in fact counterfeit. Furthermore, the client also suspected that the individual was also involved with the supply of other counterfeit goods infringing its patents.
Our client’s objectives were to discover whether the products being sold were indeed counterfeit, and if so to obtain injunctions and damages, and also to deter the individual from selling counterfeit products in the future.
We obtained samples from a distributor of the product we believed infringed, and advised the client which analytical techniques should be employed in order to establish the provenance of the goods. The tests revealed that the product did contain the patented substance, but that the products were not the same as our client’s. The products being sold were therefore counterfeit.
Proceedings were commenced against the infringer. Initially, the individual attempted to defend the action and to counterclaim for revocation of our patent. However, by destroying the credibility of his experimental data which sought to show that the patent was invalid for lack of novelty, we were able to compel him to discontinue his counterclaim. We also put forward our own robust experimental data proving both infringement and that the products were not genuine parallel imports. The matter eventually settled without a trial, and with the individual agreeing not to infringe the patent in future.
Shortly afterwards, our client discovered that the same individual was selling products which infringed another of its patents. Proceedings were again commenced, but this time he did not attempt to defend the action and immediately admitted the claim. We are currently in negotiation with his lawyers as to a suitable settlement, which we expect to contain severe penalties for future infringing activities, in order to deter him from infringing in the future.
This example illustrates the importance of patentees protecting their intellectual property rights in a robust and consistent manner. By doing so, even the most recalcitrant infringer can be stopped quickly, and deterred from carrying out similar infringing activities in the future.